Fact or Fiction: Trial Counsel Should Author Patent Opinions
When patent issues arise, clients often need both trial counsel and opinions of counsel. Opinions are primarily needed for: 1) advice on how to avoid infringement; 2) assessment of liability risks and potential outcomes of infringement lawsuits; and 3) protection against a finding that any infringement was willful. Trial counsel are needed when a patent infringement suit is threatened, imminent, or instituted. This article discusses the advantages of employing the same attorney or law firm as both opinion counsel and trial counsel. It explains why disqualification of counsel is not as much of a concern as some commentators emphasize. Finally, it analyzes the issues surrounding attorney-client privilege and work-product protection and concludes that the dangers are minimal with experienced trial counsel.
Product Review: ProLaw
After considerable analysis of our firm's existing software and case management practices, we went shopping. We chose tradeshows like the ABA Techshow to familiarize ourselves with software options. Anyone who's ever attended a tradeshow knows how overwhelming the vendor presentations can be, and how after a while all products appear to blend in one's mind. It's inevitable, given the amount of information every vendor attempts to convey in each short, intense demo session. We solved that by picking up demo disks wherever possible, and then looking them over in the comfort of our own offices once we'd returned. ProLaw stood out for many reasons, including its ability to integrate all firm practice management functions under one database - something nobody else at the time was doing well, if at all.
E-mail and Records Management in the Legal Environment
Law firms have historically recognized the need to keep all legal matters in some kind of permanent file. Therefore, the position of "record manager" is well known. However, the definition of a "record" has expanded in scope to encompass all computer-generated documents. Importantly, that now includes e-mail and e-mail attachments. This article will explore the differences between records and documents, the unique challenge e-mail represents and issues to be aware of when setting up a cutting edge records management system.
<b><i>Practice Tip</b></i>Security on the Desktop
Information security has come to play an extremely vital role in today's business environment. Whether you are a solo practitioner or an IT Director of an AmLaw 100 or 200 firm, how can you best protect your company's data from being compromised? Anyone who experienced the "Slammer Worm" attack last January or the "So Big Worm" this past August knows the astonishing speed these viruses spread across the Internet. Hundreds of thousands of networks were affected within hours of each of those outbreaks. What is even more disconcerting is that in the case of the Slammer Worm, the attack exploited a well-known vulnerability in SQL Server; one which Microsoft had already fixed in a patch six months earlier. For mid- to large-size firms, a security policy is of paramount importance in order to ensure that the most appropriate security measures have been implemented with an acceptable level of competency and consistency throughout the organization. Physical desktop security, password best practices, virus protection, software installation and e-mail best practices are a few of the subjects that would form the core of the security policy document.
Post Mortem of the Reverse Doctrine of Equivalents
The Federal Circuit in <i>Tate Access Floors,Inc. v. Interface Architectural,</i> 279 F.3d 1357, 1368 (2002), announced the death of the Reverse Doctrine of Equivalents (RDOE). The Supreme Court created the RDOE as an equitable release valve for accused devices that literally infringe claims. The RDOE applies "where a device is so far changed in principle from a patented article that it performs the same or a similar function in a substantially different way, but nevertheless falls within the literal words of the claim." <i>Graver Tank & Manufacturing Co. v. Linde Air Products Co.,</i> 339 U.S. 605, 608-609 (1950); <i>see also Boyden Power-Brake Co. v. Westinghouse,</i> 170 U.S. 537 (1898). In such a case, the RDOE "may be used to restrict the claim and defeat the patentee's action for infringement." <i>Graver Tank,</i> 399 U.S. at 609.
Corporate Governance Primer: Authority of the Board
As the ultimate repository of management authority, the board of directors is spared the often laborious process by which matters are presented to it for its determination. By necessity boards must, and are entitled to, rely on corporate officers and advisers to select, refine, and present crisply for resolution the issues that come before it. The cost of such efficiency is the risk that board meetings become formulaic, board action becomes automatous, and board members fail to learn the alternatives, procedural or substantive, that might be available. This article is intended as a corporate governance primer, identifying the toggles, levers, and switches the board can set, pull, push, in the cab of the corporate crane.
The Latest from the SEC: An Analysis
On October 15, 2003, David Lynn, Chief Counsel of the Division of Corporation Finance for the U.S. Securities and Exchange Commission(SEC), discussed recent rulings in a conference call sponsored by Glasser Legal Works. The call was moderated by Brian Lane, Gibson, Dunn & Crutcher LLP; David Martin, Covington & Burling; and Meredith Cross, Wilmer, Cutler & Pickering. Each of the moderators had formerly been in a significant position with the SEC's Division of Corporation Finance. Mr. Lynn disclaimed any relationship between his views and those of the SEC or any member of the SEC staff.
The Incredible Shrinking Privilege
Considering the role of prosecutorial discretion and the draconian consequences of a corporate conviction, corporations often have little choice but to plead guilty and cooperate with the government. Recently, the feds have raised the ante in this process by defining "cooperation" to include waiving the attorney-client privilege. Thus, corporations and counsel alike are forced into a Hobson's choice where at least partial waiver may be inevitable. Waiver law in the majority of circuits is stark - disclosure to the government is waiver as to third parties, at least as to the material disclosed. Therefore, the civil plaintiff that inevitably follows the government's investigative path finds fertile fodder in otherwise privileged, confidential, and often sensitive corporate documents that, but for the government's disclosure requirement, would be protected by privilege.
Viewpoint: Class Actions, Reform, and the Impact on Franchisors
Since the 1960s, consumer advocates have used the tool of the class action to shepherd and win redress for those who have relatively small claims, but don't have the practical means to pursue their own individual lawsuits. The honorable intention is to notify and help vulnerable or unsophisticated plaintiffs who may not even realize they have been swindled. Class actions have won significant refunds for HMO customers, credit card and utility customers, and, of course, aided victims negligently exposed to toxic substances.
